Michael Itagaki

Patent Trials and Appeals Board

Feb 2, 2021

2020003968 (P.T.A.B. Feb. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/449,629 03/03/2017 Michael Itagaki EMBO-1-001.1 1092
122997 7590 02/02/2021
BEB Clients/Branch Partners
600 University Street, Suite 620
Seattle, WA 98101
EXAMINER
BALDORI, JOSEPH B
ART UNIT PAPER NUMBER
3711
NOTIFICATION DATE DELIVERY MODE
02/02/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocketing@branchpartners.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL ITAGAKI
Appeal 2020-003968
Application 15/449,629
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12.2 See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the inventor, Michael
Itagaki. Appeal Br. 2.
2 Claims 13–20 are withdrawn from consideration. See Final Act. 1.
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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a magnetic connector for use with
anatomic models. Sole independent claim 1, reproduced below, is
representative of the claimed subject matter:
1. An anatomic model, comprising:
a first part with a first connector element disposed at one
end of the first part, the first connector element comprising at
least one tooth, at least one indented region, and a plurality of
magnets disposed within the tooth or adjacent the indented
region; and
a second part with a second connector element disposed at
one end of the second part, the second connector element
comprising at least one tooth, at least one indented region, and a
plurality of magnets disposed within the tooth or adjacent the
indented region,
wherein the at least one indented region of the second
connector element is configured and arranged to receive the at
least one tooth of the first connector element and the at least one
indented region of the first connector element is configured and
arranged to receive the at least one tooth of the second connector
element to interlock the first and second connector elements, and
wherein the magnets of the first and second connector elements
are arranged to hold the first and second connector elements
together when interlocked until manually released.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Varner US 7,144,179 B2 Dec. 5, 2006
Sakezles US 7,427,199 B2 Sept. 23, 2008
Levine US 9,795,406 B2 Oct. 24, 2017

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REJECTIONS
1. Claims 1–9 are rejected under 35 U.S.C. § 103 as unpatentable
over Sakezles and Levine.
2. Claims 10–12 are rejected under 35 U.S.C. § 103 as
unpatentable over Sakezles, Levine, and Varner.
ANALYSIS
Rejection 1
The Examiner finds that Sakezles discloses many of the limitations of
the anatomic model of claim 1, including two connector elements connected
by magnets, but does not disclose an interlocking tooth and indent
connection on the connector elements. Final Act. 2–3. The Examiner finds
that Levine discloses a tooth and indent connection and considers that it
would have been obvious to have provided the device of Sakezles with a
toothed connection to provide better alignment between the connections, as
well as making the connection more reliable, making the device easier to
use, and more attractive to users. Id. at 4–5. According to the Examiner,
although both Sakezles and Levine have a single magnet per connection,
using plural magnets is mere duplication of parts. Id. at 5 (citing In re
Harza, 274 F.2d 669 (CCPA 1960)).
Analogous Art
Appellant argues that Levine is non-analogous art. Appeal Br. 4; see
also Reply Br. 6. In particular, Appellant asserts that Levine is not in the
same field as Appellant’s invention because Levine is directed to a
thrombectomy wire, which is a medical device used in medical procedures,
whereas the claims are directed to an anatomical model, which is not a
medical device or used during a medical procedure. Appeal Br. 6; see also
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Reply Br. 6. Appellant further asserts that Levine does not relate to any
problem addressed by the invention. Appeal Br. 6. We are not persuaded of
Examiner error for the following reasons.
Two separate tests define the scope of analogous prior art: (1) whether
the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved. See In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004). We do not agree with the Examiner’s assertion
that Levine is directed to a connector in the medical field and, thus, in the
same field of invention as Appellant’s claimed invention. Ans. 8. We are,
however, persuaded that Levine is reasonably pertinent to a particular
problem with which the inventor was concerned. Id. at 9. Levine is directed
to a rotational thrombectomy wire (Levine, 1:18–19) that is connected to a
motor to rotate the wire. See Levine, 2:45–48. Levine is pertinent to a need
identified by Appellant of a device that can “be deployed or retrieved
easily.” Spec., 2:1–2. Appellant describes its solution to this problem by
using a toothed, magnetic connector to “create a better connection by
guiding the two parts together as their proximity closes,” and that “ensures
that the two parts are aligned and oriented correctly as they are mated.”
Spec., 7:10–21. Levine discloses that female coupler 520 has a plurality of
recesses 528 that receive projections or prongs 518 of male coupler 510 and
that “[p]rojections 518 can have an angled end 518a to provide a lead in for
coupling to the female connector 520.” Levine, 12:64–13:1; see also Final
Act. 4–5. Thus, Levine relates to a problem addressed by the invention by
describing a device that can be deployed easily by using a toothed, magnetic
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connector to guide the two parts together so that the parts are aligned and
oriented correctly as they are mated. One of ordinary skill in the art looking
to guide and align two parts would not have sought a solution to this
problem by looking only to anatomical models. Rather, a medical device
used in tight, twisting areas such as disclosed in Levine would have been
reasonably pertinent to the problem facing Appellant. Because Levine is
reasonably pertinent to Appellant’s problem, we agree with the Examiner
that Levine is analogous art.
Reasoning in References
Appellant argues that there is no reason or motivation to combine the
references as asserted in the Final Office Action because the alleged reasons
to combine the references are not disclosed by Sakezles or Levine. Appeal
Br. 7. We are not persuaded by this argument for the following reasons.
Appellant’s argument is apparently based on the rigid TSM standard.
But, the TSM a standard is no longer required. Although the requirement of
demonstrating a teaching, suggestion, or motivation (the TSM test
established by the Court of Customs and Patent Appeals) to combine known
elements in order to show that the combination is obvious may be “a helpful
insight,” it is not a mandatory formula. KSR International Co. v. Teleflex
Inc., 550 U.S. 398, 418–419 (2007). Here, the Examiner’s rationale for the
modification is to provide a better alignment between the connections,
making the connection more reliable, making the device easier to use, and
more attractive to the users. See Final Act. 4–5 (citing Levine, 12:64–13:1).
We find the Examiner’s reasoning to be sufficient and supported by the
disclosure of Levine. Specifically, we agree with the Examiner that
Levine’s disclosure of a “lead in” improves the alignment of the
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connections, which is bolstered by the Examiner’s assertion, not disputed by
Appellant, that it is generally known in the art that a toothed connection
makes the connection more reliable, makes the device easier to use, and
more attractive to users. Ans. 10–11.
No Motivation to Modify Sakezles
After quoting the heading for MPEP § 2141.02 which relates to
references that teach away from the claimed invention, Appellant argues that
because Levine’s coupler is attached to a motor, and because Sakezles does
not use a motor, a skilled artisan would not have been motivated to modify
Sakezles based on Levine. Appeal Br. 8; see also Reply Br. 8. For the
following reasons we are not persuaded by Appellant’s argument.
The Examiner proposes to add teeth (separated by recesses) to the end
part of the connectors as seen in Figure 18 of Levine. Levine discloses that
using a toothed connection provides a lead in, which improves alignment.
Levine, 12:64–13:1. Appellant does not dispute this teaching by Levine or
the Examiner’s finding that a toothed connection is known to make the
connection more reliable, make the device easier to use, and more attractive
to users. The fact that Levine may be solving different problems does not
obviate the Examiner’s rationale for the determination of obviousness. See
KSR 550 U.S. at 417 (“When a work is available in one field of endeavor,
design incentives and other market forces can prompt variations of it, either
in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.”).
Hindsight
Appellant argues that the only teaching of an improved connection is
provided by Appellant’s disclosure and that the Examiner uses the disclosure
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to improperly provide a roadmap for combining the references. Appeal Br.
9. According to Appellant, Levine’s teaching of a toothed design is to
prevent the connectors from slipping during rotation, which is not pertinent
to the anatomic model of Sakezles. Reply Br. 10. Appellant’s argument is
not persuasive.
Although Levine uses a toothed connection to prevent slipping during
rotation, Levine also uses a toothed connection for aligning the connectors
prior to coupling. Levine, 12:64–13:1; see also Ans. 10–11. Appellants’
argument that the Examiner relied on improper hindsight is, thus, not
persuasive because the Examiner has stated a rationale for the modification
of Sakezles that we determine is adequately supported by sufficient facts.
See In re Cree, 818 F.3d 694, 702, n.3 (Fed. Cir. 2016).
Plural Magnets
Appellant argues that claim 1 requires plural magnets for each
connector element that are within a tooth or adjacent an indented region,
whereas Sakezles and Levine both disclose a single magnet in each coupler
that are not disposed as recited. Appeal Br. 10. Appellant’s argument is not
persuasive for the following reasons.
As the Examiner correctly finds, Levine teaches a first magnet 524
adjacent to indented region 528 and within toothed area 529, as well as a
second magnet 514 adjacent to an indented region. Ans. 11–12; see also
Levine, Fig. 18. As to the claimed plurality of teeth, we agree with the
Examiner that this is a mere duplication of parts. See Ans. 12 (citing In re
Harza, 274 F. 2d 669 (CCPA 1960)). The Harza Court found that “[i]t is
well settled that the mere duplication of parts has no patentable significance
unless a new and unexpected result is produced.” Harza, 274 F.2d at 671.
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Appellant does not direct us to any evidence in the record or provide
persuasive argument that placing a plurality of magnets within the tooth or
adjacent the indented region as recited in claim 1, results in new or
unexpected results. In particular, dividing Levine’s circular magnet 524 into
two semicircular magnets or into four quadrants that correspond to the four
ribs (teeth) 529 of Levine would provide the same magnetic coupling to
Levine’s magnet 514, which also could be similarly divided.
Summary
We have considered each of Appellant’s arguments, but we are not
apprised of error in the Examiner’s factual findings or reasoning for the
rejection of claim 1. Accordingly, we sustain the rejection of claim 1.
Appellant does not argue separately for the patentability of dependent claims
2 and 5–9 which therefore fall with claim 1.
Claims 3 and 4
Appellant argues that magnets 524, 514 of Figures 18 and 20 of
Levine are not “disposed in a tooth, as recited in claim 3.” Appeal Br. 11.
Appellant, thus, argues that claim 3, as well as claim 4 which depends
therefrom, is patentable over the cited references. Id. Appellant makes a
similar assertion against claim 1 that is impermissibly raised for the first
time in the Reply Brief. See Reply Br. 13. Appellant’s argument, whether
applied to claim 1 or claim 3, is not persuasive for the following reasons.
Appellant’s Specification discloses that “connector 100 makes use of
interlocking teeth 108 and indented regions 110 that can be gear-like in
design” to form an interlocking connection. Spec. 7:10–12. We reproduce
below Appellant’s Figure 1, which depicts connector 100.
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Figure 1 is a schematic side view of two connector elements of a
connector. Spec. 4:20–21.
Levine discloses a similar interlocking connection having a plurality
of recesses 528 separated by ribs 529 having magnet 524 “positioned
within” ribs 529 (Levine, 12:62), and which recesses 528 receive projections
or prongs 518 to form a coupling as seen in Figure 18, reproduced below.
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Figure 18 is a perspective view of an alternate embodiment of the
coupler for coupling the thrombectomy wire to the motor. Levine, 6:16–18.
The coupling of Figure 18 is disclosed as an alternative to Levine’s
“teeth 437, 457” that allow slipping (Levine, 12:40–42), and are depicted in
Figure 15, reproduced below.

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Figure 15 is a perspective view of an alternate embodiment of the
coupler for coupling the thrombectomy wire to the motor. Levine, 6:8–10.
Based on the disclosure of Levine, we understand Levine’s
recess/prong/rib connection to be a toothed connection, but having deeper
recesses to form a more robust connection than the teeth that allow slipping.
The result of the Examiner’s determination that duplication of parts has no
patentable significance (Ans. 12) is the single magnet 524 is duplicated and
the multiple magnets of the first connector element will be disposed within
teeth of the first connector element. Accordingly, we sustain the rejection
of claims 3 and 4.

Rejection II, Obviousness Claims 10–12
Claims 10–12 depend from claim 1. Appeal Br. 13 (Claims App.).
Appellant does not argue separately for the patentability of claims 10–12
other than to state that “Varner does not address any of the deficiencies of
Levine and Sakezles.” Appeal Br. 11. We sustain the rejection of claims
10–12 for the same reasons discussed above.
CONCLUSION
The Examiner’s rejections are affirmed.
More specifically,
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9 103 Sakezles, Levine 1–9
10–12 103 Sakezles, Levine 10–12
Overall
Outcome

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED